Ex Parte Heuvelman

Patent Trial and Appeal Board

Sep 27, 2017

13441619 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/441,619 04/06/2012 Dale Heuvelman DHS 8690.1100 1026
321 7590 09/29/2017
SFNNTOFR POWFR N T T P EXAMINER
100 NORTH BROADWAY BLACK, MELISSA ANN
17TH FLOOR
ST LOUIS, MO 63102 ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents @ senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE HEUVELMAN
Appeal 2016-001461
Application 13/441,6191
Technology Center 3600
Before JEAN R. HOMERE, DAVID J. CUTITTAII, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—19, which are all of the pending claims.2 Br. 28—30
(Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant’s Brief (“Br.”) identifies DHSquared Innovations, LLC as the
real party in interest. Br. 1.
2 Claim 20 has been previously cancelled. Br. 1.
Appeal 2016-001461
Application 13/441,619
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a contractor vehicle. Spec. 12.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A vehicle comprising a chassis, a cab mounted on
the chassis, and a body mounted behind the cab, the body
comprising:
a bottom;
a top opposite the bottom;
sides extending between the top and bottom, the sides
partially enclosing an interior space and defining an opening for
accessing said interior space;
a closure moveable between an open position in which
the interior space may be accessed through the opening, and a
closed position in which the closure limits access to the interior
space; and
a ladder compartment positioned in the interior space
adapted for receiving a ladder having a length of at least about
12 feet, said ladder compartment having a lower surface
positioned at a level no more than about 42 inches above
ground level, the ladder compartment having an open end
facing generally toward said opening, the storage compartment
being configured so a ladder can be moved longitudinally into
and out of the ladder compartment through the open end of the
ladder compartment.
App. Br. 28 (Claims Appendix).
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Barruw
Cherry
Lasnetski
Rafi-Zadeh
Scott
US 4,277,095 July 7, 1981
US 4,705,315 Nov. 10, 1987
US 5,172,952 Dec. 22, 1992
US 6,644,712 B1 Nov. 11, 2003
US 7,083,045 B2 Aug. 1, 2006
2
Appeal 2016-001461
Application 13/441,619
Thole US 2006/0226671 A1 Oct. 12, 2006
Heuvelman US 8,162,371 B2 Apr. 24,2012
REJECTIONS
Claims 1, 7, 8, 11—15, and 17 stand rejected on the ground of non-
statutory double patenting over claims 1,9, 10, and 12 of Heuvelman.3
Non-Final Act. 2—6.
Claims 1, 2, 9, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thole. Non-Final Act. 6—7.4
Claims 3—8 and 12—17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thole, and Rafi-Zadeh. Id. at 7—8.
Claims 1, 2, 9, 11, and 18, stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lasnetski and Thole. Id. at 8—9.5
Claims 3—8 and 12—17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lasnetski, Thole, and Rafi-Zadeh. Id. at 9-10.
Claims 1, 2, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scott and Barruw. Id. at 10-11.
Claims 3—8 and 12—17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Scott, Barruw, and Rafi-Zadeh. Id. at 11—12.
Claims 9, 10, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Scott, Barruw, Rafi-Zadeh, and Cherry. Id. at 12.
3 Appellant presents no argument with respect to the double patenting
rejection. Br. 2 (“The double patenting rejections are not being appealed.”)
Accordingly, we affirm this rejection pro-forma.
4 We note the Examiner has withdrawn the previously maintained rejection
of claims 10 and 19 as being obvious over Thole. Ans. 13.
5 We note the Examiner has withdrawn the previously maintained rejection
of claims 10 and 19 as being obvious over Lasnetski and Thole. Ans. 13.
3
Appeal 2016-001461
Application 13/441,619
ISSUES
First Issue: Has the Examiner erred in finding Thole teaches or
suggests “a ladder compartment positioned in the interior space adapted for
receiving a ladder having a length of at least about 12 feet,” as recited in
claim 1?
Second Issue: Has the Examiner erred in finding Lasnetski and Thole
are properly combinable and that the combination teaches or suggests a
ladder compartment “adapted for receiving a ladder having a length of at
least about 12 feet [and]... no more than about 42 inches above ground
level,” as recited in claim 1 ?
Third Issue: Has the Examiner erred in finding Scott and Barruw are
properly combinable and that the combination teaches or suggests “a ladder
compartment positioned in the interior space,” as recited in claim 1?
Fourth Issue: Has the Examiner erred in finding Cherry teaches the
limitations recited in claims 9 and 10?
Fifth Issue. Has the Examiner erred in finding the storage
configuration taught by Rafi-Zadeh renders obvious the configurations
recited in claims 3—8 and 12—17?
ANALYSIS
First Issue
The Examiner rejects claim 1 as being unpatentable over Thole. In
doing so, the Examiner finds Thole discloses most of the limitations recited
in claim 1. Non-Final Act. 6—7. Relevant to Appellant’s arguments, the
Examiner finds Thole teaches “a ladder compartment positioned in the
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Application 13/441,619
interior space [of the vehicle body] adapted for receiving a ladder.” The
Examiner acknowledges Thole does not disclose that the ladder
compartment is adapted to receive a ladder “having a length of at least about
12 feet.” Non-Final Act. 5. Nevertheless, the Examiner finds this
configuration taught by Thole because the 12 foot length requirement is
merely a “dimension^ and hold[s] little to no patentable weight,” and that
“[s]ize doesn’t matter.” Id. at 7. The Examiner concludes it would have
been obvious that Thole’s configuration could be used in “any type of truck
used for storing/hauling tools.” Non-Final Act. 7.
Appellant contends the Examiner has erred because it is improper to
give no patentable weight to the length of the ladder compartment. App.
Br. 5—6. Appellant further argues the Examiner has not sufficient explained
why an ordinarily skilled artisan would modify Thole to include a 12 foot
ladder compartment. According to Appellant, the Examiner’s reasoning
fails to adequately explain why an ordinarily skilled artisan would modify in
the manner proposed by the Examiner, and that modifying Thole in such a
manner would not have a reasonable expectation of success. Id. at 6—7.
We agree with Appellant the Examiner has failed to provide sufficient
reasoning with a rational underpinning that explains why an ordinarily
skilled artisan would have sought to extend Thole’s ladder compartment to
12 feet and use it in “any type of truck.” The Examiner’s finding in this
regard in unsupported, and we do not sustain the Examiner’s rejection of
claim 1 as obvious over Thole. For the same reason, we do not sustain the
rejection of independent claim 11, which recites the same limitations.
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Second Issue
The Examiner also rejects claim 1 as being unpatentable over the
combination of Lasnetski and Thole. The Examiner finds Lasnetski
discloses the limitations of claim 1, including a ladder compartment adapted
for receiving a 12 foot ladder. Non-Final Act. 8. The Examiner finds
Lasnetski deficient in that it does not disclose “ladder compartment having a
lower surface positioned at a level no more than about 42 inches above
ground level, the ladder compartment having an open end facing generally
toward said opening.” Id. Rather, Lasnetski discloses the ladder department
positioned on the roof of the truck interior. Lasnetski, Fig. 1. To cure the
deficiency, the Examiner relies on Thole, finding it teaches a “ladder
compartment [(62)] having a lower surface positioned at a level no more
than about 42 inches above ground level, . . . [and] having an open end
facing . . . [the] opening.” Non-Final Act. 8 (citing Thole, Fig. 7). The
Examiner finds it would have been obvious to modify Lasnetski to use the
floor-located ladder compartment taught by Thole in order to have easier
access to the ladder. Id. at 9.
Appellant contends the Examiner has erred because a skilled artisan
would not modify Thole’s truck to incorporate the 12 foot ladder as taught
by Lasnetski. App. Br. 12—14. This argument is not persuasive because it
does not address the rejection made by the Examiner. The Examiner does
not propose modifying Thole to include the 12 ladder taught by Lasnetski.
Rather, the Examiner proposes modifying Lasnetski’s 12 foot ladder
compartment by moving it to the floor of the bed as taught by Thole. Non-
Final Act. 8—9. Thus, this argument asserts error in a finding not made by
the Examiner.
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Appellant also argues the proposed modification of Lasnetski is
“contrary to the whole point of the Lasnetski invention, which is to suspend
a ladder from the roof of the vehicle.” App. Br. 14 (citing Lasnetski, col. 1,
11. 17—23). We are not persuaded by this argument. The Federal Circuit has
recognized when a proposed modification of a reference may impede some
of its functionality, a combination of references is still proper. Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[a] given course
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate motivation to combine”). Here, the Examiner
finds an ordinarily skilled artisan would have sought to improve Lasnetski
by moving the ladder compartment to the floor as taught by Thole.
Although this reconfiguration may create a disadvantage in that the ladder
may impact the organization of other tools and materials, it would at the
same time provide the advantage of making the ladder more accessible and
easier to load and unload into the truck. In fact, Lasnetski recognizes that in
trucks with high ceilings, placement of the ladder on the ceiling can create
challenges for loading and unloading. See Lasnetski, col. 2,11. 28—31. Thus,
we agree with the Examiner that a person or ordinary skill in the art would
view this modification as an acceptable trade-off of functionality, and
Lasnetski does not teach away from the claimed invention. Accordingly, we
sustain the rejection of claim 1 as obvious over Lasnetski and Thole, as well
as that of claim 11 for which Appellant relies on the same argument.
Third Issue
The Examiner also rejects the independent claims as being
unpatentable over the combination of Scott and Barruw. In setting forth this
rejection, the Examiner finds Scott teaches most of the claim limitations,
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including a ladder compartment with a back-facing opening for a truck that
can accommodate a 12 foot ladder with a lower surface positioned no more
than 42 inches above ground level. Non-Final Act. 10 (citing Scott, col. 1,1.
62—col. 2,1. 1, Abstract). However, as Scott is directed to a ladder
compartment specifically and not to the vehicle itself, it does not explicitly
teach the recited vehicle, its chassis, the cab and the body. Recognizing this
deficiency, the Examiner cites Barruw as teaching a truck, cab, chassis, and
body as claimed. The Examiner finds an ordinarily skilled artisan would
have combined Scott and Barruw, reasoning that:
It would have been obvious to one with ordinary skill in the art
at the time the invention was made to use a closed back box
truck as taught by Barruw with the ladder device of Scott, since
Scott fails to show the type of truck and Barruw teaches that a
box truck is used for hauling items it would have been obvious
that the Type of truck as taught by Barruw is capable of being
used with the device of Scott.
Non-Final Act. 11.
Appellant argues the combination of Scott and Barruw, even if proper,
does not disclose “a ladder compartment positioned in the interior space”
of a truck because neither Scott nor Barruw teaches storing a ladder inside
an enclosed truck body which limits access to the interior of the truck space.
App. Br. 17—18. According to Appellant, “the purpose of the storage device
10 in Scott is to protect a ladder and/or other objects stored on the exterior of
the truckf as evidenced by Scott’s references to weather-proofing, theft
prevention, and reduction of wind resistance. Id. at 18 (citing Scott, col. 2,
11. 5-7, 65-67, col. 4,11. 62-63, col. 5,11. 10-14, col. 6,11. 41^15).
Appellant further argues Barruw is a meat hanging truck, and provides no
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Application 13/441,619
suggestion of transporting a ladder or any compartment for doing so. Id. at
19.
Appellant also contends the combination is improper. App. Br. 19—
22. Appellant argues because Scott’s compartment is designed to be used on
the exterior of a truck, and protects the ladder from theft and the elements,
an ordinarily skilled artisan would not have placed Scott’s compartment in
the interior of the Barruw truck because there would be no benefit to doing
so. Id. at 21—22. More specifically, Appellant argues because Scott’s device
already provides theft protection when attached to the exterior of the truck,
there would be no reason to place the compartment inside of Barruw truck,
is Scott’s compartment already provides the needed protection. App. Br. 22.
We are not persuaded by Appellant’s arguments. With respect to
Appellant’s contention that neither Scott nor Barruw teaches a ladder
compartment positioned inside a truck body, we disagree. We first note
Scott teaches his ladder compartment “includes a universal mounting means
for enabling secured attachment to any conventional object, such as . . .
frame mounts generally secured to truck’s beds, or the like.” Scott, col. 1,
11. 10-12; see also col. 1,11. 43^44 (“enabling attachment to . . . the bed of a
truck”). Thus, Scott teaches the ladder compartment can be secured to the
bottom of a truck bed. Barruw teaches an interior space of a truck body.
Taken together, the references teach a ladder compartment being secured to
the bottom surface of a truck bed (Scott), and a bottom surface fully
enclosed inside a truck body (Barruw).
Nor are we persuaded that Scott and Barruw are not properly
combined. Appellant argues a person or ordinary skill would not have
sought to place Scott’s ladder compartment inside a truck body such as
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Barruw’s because the ladder compartment taught by Scott already provides
theft protection. We agree with the Examiner that a skilled artisan would
not have been dissuaded from the combination. As explained by the
Examiner, an explanation with which we agree, the use of Scott’s lockable
ladder compartment within a locked truck body is no different than locking a
glove compartment within a locked automobile for added protection of the
contents within. Ans. 17. Accordingly, we are not persuaded the Examiner
erred in rejecting claim 1 as obvious over Scott and Barruw, and we sustain
the rejection of claim 1, as well as of claim 11 for which Appellant advances
the same arguments. We also sustain the rejections of claims 2, 9, and 18
for which Appellant advances no separate arguments.
Fourth Issue
Appellant separately argues for patentability of claims 9 and 10,
which are rejected under § 103(a) as obvious over Scott, Barruw, and
Cherry, and which are reproduced below for ease of reference:
9. A vehicle as set forth in claim 1 wherein the body
includes a work surface.
10. A vehicle as set forth in claim 9 further
comprising:
a wheeled storage unit positionable below said work
surface; and
a latch for retaining said storage unit below said work
surface.
App. Br. 29 (Claims Appendix).
In rejecting claims 9 and 10, the Examiner finds Scott and Barruw do
not teach “wherein the body includes a work surface.” Non-Final Act. 12.
The Examiner relies on Cherry, finding it “discloses a wheel[ed] storage unit
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Application 13/441,619
with a work surface on top, and a latch [(36)] for retaining the storage unit
and the work surface.” Id. (citing Cherry, Fig. 1).
Appellant argues Cherry is deficient because it does not teach a work
surface as recited in claim 9, and also that even if the top of Cherry’s storage
container could be considered a work surface, it does not teach a wheeled
storage unit “positionable below said work surface” or a “latch for retaining
said storage unit below said work surface.” App. Br. 26. We agree.
Cherry teaches a storage unit “mounted on an extension track which
permits an operator to fully extract the storage container through the open
cargo doors.” Cherry, Abstract. Cherry teaches the storage container
“encompasses most [of] the usable cargo space of a trade van.” Id. Cherry
makes no mention any work surface, nor do we agree with the Examiner that
the top surface of the storage container could be useful as one. As shown in
Figure 1, the storage container remains elevated as it slides out of the back
of the van on the extension track. The top surface of the storage container
sits several feet above the ground, at a height that could hardly be reached by
a person standing alongside the container. Moreover, the top surface of the
container is depicted as quite narrow, and it is not easily accessible due to
the broad base of the storage container. As such, we find the Examiner has
not established Cherry teaches “wherein the body includes a work surface,”
as recited in claim 9, and we do not sustain its rejection, nor of claim 10
which depends therefrom. For the same reason, we do not sustain the
rejection of claims 18 and 19, which are commensurate in scope to claims 9
and 10, respectively.
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Fifth Issue
Claims 3—8 and 12—17 recite various configurations for “a plurality of
elongate storage compartments” and “a plurality of elongate storage bins.”
The Examiner rejects these claims as unpatentable over Lasnetski, Thole,
and Rafi-Zadeh, and also over Scott, Barruw, and Rafi-Zadeh. Under both
combination of prior art, the Examiner finds “Rafi-Zadeh teaches elongated
storage compartments with openings facing the opening of the [truck] body,
and elongated storage bins with openings facing in the upward direction.”
Non-Final Act. 11. The Examiner finds the various configurations recited in
claims 3—8 and 12—17 would have been obvious because “Rafi-Zadeh
discloses that the devices may be placed in different positions,” and that an
ordinarily skilled artisan would have organized the storage containers based
on the items stored and the storage requirements for those items. Non-Final
Act. 11—12. The Examiner further explains “[i]t would require little to [no]
skill for one to move a compartment or storage device based on need of tools
and equipment.” Id. at 11—12.
Appellant argues the Examiner has erred in rejecting claims 3—8 and
12—17 because the Examiner has failed to point to any specific disclosure of
the claimed configurations and placements. App. Br. 11. Appellant further
argues the Examiner has failed to set forth reasoning with rational
underpinning to support the conclusion of obviousness, and instead “simply
cites Rafi-Zadeh for disclosure of a device including elongated storage
compartments and storage bins.” Id. at 11. According to Appellant, “the
prior art does not disclose anything that is being stored in the truck or
vehicle that would induce a person to arrange storage compartments or bins
in the manner specified by the claims.” Id. at 11—12.
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We are not persuaded by Appellant’s arguments. In KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007), the Supreme Court rejected a rigid
application of a teaching-suggestion-motivation test in the obviousness
determination. The Court emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418.
Thus, an “[ejxpress suggestion to substitute one equivalent for another need
not be present to render such substitution obvious.” In re Font, 675 F.2d
297, 301 (CCPA 1982).
Here, the Examiner finds a person of ordinary skill in the art, based on
the size and shape of items carried in the truck would have found it obvious
to provide storage compartments and storage bins of varying sizes and
shapes, and to position those compartments and bins according to need. In
our view, the Examiner has properly “take[n] account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 318. We also agree with the Examiner that the various
arrangements recited in Appellant’s claims are merely predictable variations
of storage compartment and bin placements and configurations, easily
implemented by a person of ordinary skill in the art. Id. at 417 (“If a person
of ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.”) As a result, we are not persuaded the Examiner has erred in
concluding claims 3—8 and 12—17 are obvious over Lasnetski, Thole, and
Rafi-Zadeh, and also over Scott, Barruw, and Rafi-Zadeh, and we sustain
these rejections under 35 U.S.C. § 103.
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DECISION
We summarily affirm the Examiner’s double patenting rejection of
claims 1, 7, 8, 11—15, and 17.
We reverse the rejection of claims 1, 2, 9, 11, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Thole.
We reverse the rejection of claims 3—8 and 12—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Thole and Rafi-Zadeh.
We affirm the rejection of claims 1, 2, 9, 11, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Lasnetski and Thole.
We affirm the rejection of claims 3—8 and 12—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Lasnetski, Thole, and Rafi-Zadeh.
We affirm the rejection of claims 1, 2, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Scott and Barruw.
We affirm the rejection of claims 3—8 and 12—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Scott, Barruw, and Rafi-Zadeh.
We reverse the rejection of claims 9, 10, 18, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Scott, Barruw, Rafi-Zadeh, and Cherry.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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